Longshore v. Retail Royalty Company , 589 F. App'x 963 ( 2014 )


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  •        NOTE: This disposition is nonprecedential.
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    MICHAEL R. LONGSHORE,
    Appellant,
    v.
    RETAIL ROYALTY COMPANY,
    Appellee.
    ______________________
    2014-1448
    ______________________
    Appeal from the United States Patent and Trademark
    Office, Trademark Trial and Appeal Board in Opposition
    No. 91192917.
    ______________________
    Decided: September 15, 2014
    ______________________
    MICHAEL R. LONGSHORE, of Duarte, California, pro se.
    LISA PEARSON, Kilpatrick Townsend & Stockton LLP,
    of New York, New York, for appellee. Of counsel were
    KRISTIN G. GARRIS, of New York, New York, and LAURA
    CRAVER MILLER, of Winston-Salem, North Carolina.
    ______________________
    Before DYK, TARANTO, and CHEN, Circuit Judges.
    2                     LONGSHORE   v. RETAIL ROYALTY COMPANY
    DYK, Circuit Judge.
    Michael Longshore (“Longshore”) sought to register a
    mark with the United States Patent and Trademark
    Office (“PTO”). Retail Royalty Company (“Retail Royal-
    ty”), the owner of a previously registered mark, opposed
    the registration. The Trademark Trial and Appeal Board
    (“Board”) refused registration pursuant to 15 U.S.C.
    § 1052(d) because it concluded that Longshore’s mark
    was likely to cause confusion in light of its resemblance to
    Retail Royalty’s previously registered mark. We affirm.
    BACKGROUND
    Retail Royalty, the opposer, owns a registered mark
    depicting a flying bird, shown below:
    Retail Royalty Co. v. Longshore, Opp. No. 91,192,917, slip
    op. at 2–3, 
    2014 WL 343268
    (TTAB Jan. 21, 2014) (“Board
    Op.”).1 Retail Royalty registered its mark for “[w]earing
    apparel, clothing, and clothing accessories, namely, bot-
    toms, gym suits, tops, lingerie, pants, shirts, shorts,
    skirts, sleep wear, sweaters, swim wear, underwear,
    footwear, and headwear, in Class 25.” Board Op. 3 (quot-
    ing U.S. Trademark Registration No. 3,539,007). Retail
    1  The Board also recognized that Retail Royalty has
    two other registered marks depicting flying birds, but
    only analyzed the registrations for the particular design
    shown above.
    LONGSHORE   v. RETAIL ROYALTY COMPANY                       3
    Royalty also registered its mark for “[w]earing apparel,
    clothing, and clothing accessories, namely, beachwear,
    jackets, leg warmers, loungewear, robes, scarves, in Class
    25.” Board Op. 3. (quoting U.S. Trademark Registration
    No. 3,662,110). Both registrations have the same filing
    date of August 24, 2006. See U.S. Trademark Registration
    Nos. 3,539,007 and 3,662,110.2
    On May 26, 2009, Longshore filed an intent-to-use
    application, seeking to register a mark for clothing, repro-
    duced below:
    Board Op. 1. The application stated that the mark would
    be for the following goods:
    A-shirts; Athletic apparel, namely, shirts, pants,
    jackets, footwear, hats and caps, athletic uni-
    forms; Dress shirts; Hooded sweat shirts; Knit
    shirts; Long-sleeved shirts; Night shirts; Open-
    necked shirts; Polo shirts; Shirts; Shirts for suits;
    2    In 2014, after the Board’s decision issued, Retail
    Royalty apparently amended one registration by deleting
    the category of wearing apparel in Class 25. See Registra-
    tion No. 3,539,007. Even if we could take post-decisional
    amendments into account, the amendment here would
    have no significance because Retail Royalty’s other regis-
    tration continued to identify that category—wearing
    apparel in Class 25—as a registered usage for the mark.
    See Registration No. 3,662,110.
    4                    LONGSHORE   v. RETAIL ROYALTY COMPANY
    Short-sleeved or long-sleeved t-shirts; Short-
    sleeved shirts; Sleep shirts; Sport shirts; Sports
    shirts; Sports shirts with short sleeves; Sweat
    shirts; T-shirts; Turtle neck shirts; Wearable
    garments and clothing, namely, shirts, in Class
    25.
    Board Op. 2. The PTO published Longshore’s mark for
    opposition on October 26, 2009.
    On December 7, 2009, Retail Royalty filed a Notice of
    Opposition, asserting that the PTO should refuse regis-
    tration of Longshore’s mark pursuant to 15 U.S.C.
    § 1052(d). That section provides that the Board may
    refuse to register a mark that “so resembles a mark
    registered in the [PTO], or a mark or trade name previ-
    ously used in the United States by another and not aban-
    doned, as to be likely, when used on or in connection with
    the goods of the applicant, to cause confusion, or to cause
    mistake, or to deceive.” 15 U.S.C. § 1052(d). Retail Royal-
    ty argued that the design in Longshore’s application so
    resembled its registered mark as to create a likelihood of
    consumer confusion, mistake, or deception.3
    The Board presumed that the goods associated with
    the marks would have the same channels of trade and
    classes of purchasers because the application and regis-
    tration listed a number of identical goods, including, inter
    alia, shirts, pants, and footwear. The Board determined
    that Retail Royalty’s mark is arbitrary and inherently
    strong when used with clothing. As both marks depict
    silhouettes of a bird in flight with outspread wings, the
    3   Retail Royalty amended its Notice of Opposition to
    add a claim that Longshore did not have a bona fide
    intent to use his mark when he filed his application. The
    Board did not reach this issue, and we see no error in its
    refusal to address it.
    LONGSHORE   v. RETAIL ROYALTY COMPANY                     5
    Board deemed the two marks “similar in terms of appear-
    ance and commercial impression.” Board Op. 12. Balanc-
    ing these considerations, the Board concluded that
    Longshore’s mark so resembled Retail Royalty’s mark as
    to be likely to cause confusion and therefore refused to
    register Longshore’s mark. Longshore appealed. We have
    jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
    Likelihood of confusion is a legal question based on
    underlying facts. On-Line Careline, Inc. v. Am. Online,
    Inc., 
    229 F.3d 1080
    , 1084 (Fed. Cir. 2000). We review the
    Board’s legal conclusion de novo and its factual findings
    for substantial evidence. 
    Id. at 1084,
    1085; see also Bose
    Corp. v. QSC Audio Prods., Inc., 
    293 F.3d 1367
    , 1370
    (Fed. Cir. 2002).
    DISCUSSION
    Longshore challenges the Board’s finding of a likeli-
    hood of consumer confusion. Our predecessor court estab-
    lished the factors to consider when assessing the
    likelihood of confusion. In re E.I. DuPont DeNemours &
    Co., 
    476 F.2d 1357
    , 1361 (CCPA 1973). These are known
    as the DuPont factors. See, e.g., Citigroup Inc. v. Capital
    City Bank Grp., Inc., 
    637 F.3d 1344
    , 1349 (Fed. Cir. 2011);
    On-Line 
    Careline, 229 F.3d at 1084
    . This appeal impli-
    cates the following DuPont factors: the similarity or
    dissimilarity of the marks in their entireties as to appear-
    ance, sound, connotation and commercial impression; the
    similarity or dissimilarity and nature of the goods or
    services as described in an application or registration or
    in connection with which a prior mark is in use; the
    similarity or dissimilarity of established, likely-to-
    continue trade channels; and the number and nature of
    similar marks in use on similar goods. See 
    DuPont, 476 F.2d at 1361
    (listing factors); On-Line 
    Careline, 229 F.3d at 1084
    (same).
    6                    LONGSHORE   v. RETAIL ROYALTY COMPANY
    Longshore argues that the Board erred in characteriz-
    ing both images as depicting doves, asserting that his
    mark is a dove while Retail Royalty’s mark is in fact a
    bird of prey. The Board’s characterization of both marks
    as doves is irrelevant. It is well-established that in cases
    “involving two design marks which are not word marks
    and are not capable of being spoken, the question [of the
    similarity of the marks] must be decided primarily on the
    basis of visual similarity of the marks.” In re ATV Net-
    work Ltd., 
    552 F.2d 925
    , 927 (CCPA 1977) (emphasis
    added); see also, e.g., In re Burndy Corp., 
    300 F.2d 938
    ,
    939–40 (CCPA 1962); 4 J. Thomas McCarthy, McCarthy
    on Trademarks & Unfair Competition § 23:25 (4th ed.
    2008) (“Obviously, for picture and design marks (as op-
    posed to word marks), similarity of appearance is control-
    ling.”). Viewing the marks side-by-side, the Board
    recognized slight visual differences, but found the overall
    appearance and impression similar because both marks
    were silhouettes of birds with outstretched wings. We
    conclude that the Board’s conclusion is supported by
    substantial evidence.
    Longshore also contends that the Board erred in de-
    termining that marks would be used for goods with the
    same channels of trade and classes of purchasers. Before
    the Board, Longshore argued that his mark would be used
    specifically for “inspirational wear,” which apparently
    refers to clothing that conveys an inspirational message,
    and submitted a website excerpt discussing the signifi-
    cance of doves in the Bible. On appeal, he calls the cloth-
    ing “Universal Peacewear,” suggesting a message that
    connotes support for peace. He attempts to distinguish his
    goods by claiming that Retail Royalty’s mark is only used
    for women’s apparel.
    “Our precedent requires the Board to look to the reg-
    istration to determine the scope of the goods/services
    covered by the contested mark.” Cunningham v. Laser
    LONGSHORE   v. RETAIL ROYALTY COMPANY                      7
    Golf Corp., 
    222 F.3d 943
    , 948 (Fed. Cir. 2000); see also
    Octocom Sys., Inc. v. Houston Computer Servs., Inc., 
    918 F.2d 937
    , 942 (Fed. Cir. 1990) (the application controls
    “regardless of what the record may reveal as to the par-
    ticular nature of an applicant’s goods”); TMEP § 1207.01
    (Apr. 2014) (requiring examiner to make determination
    based on “the goods or services identified in the applica-
    tion”).
    Longshore’s application does not restrict the use of his
    mark to inspirational or peace-related clothing. Nor do
    Retail Royalty’s registrations limit its mark to women’s
    apparel. Rather, the application and registrations both
    list apparel and clothing generally as well as specific
    identical items, such as shirts, pants, jackets, and foot-
    wear. When an application and registration list identical
    goods, “‘absent restrictions in the application and regis-
    tration, goods and services are presumed to travel in the
    same channels of trade to the same class of purchasers.’”
    In re Viterra Inc., 
    671 F.3d 1358
    , 1362 (Fed. Cir. 2012)
    (quoting Hewlett–Packard Co. v. Packard Press, Inc., 
    281 F.3d 1261
    , 1268 (Fed. Cir. 2002) (citing CBS Inc. v. Mor-
    row, 
    708 F.2d 1579
    , 1581 (Fed. Cir. 1983))). Because
    substantial evidence supports the Board’s finding that the
    application and registrations list certain identical goods,
    the Board did not err in presuming that the goods would
    have the same channels of trade and classes of consumers.
    Finally, Longshore contends that the Board erred in
    failing to consider a third party’s use of a bird silhouette
    design when assessing the strength of Retail Royalty’s
    mark. To support his application, Longshore submitted an
    excerpt from a website that depicts a textual mark ac-
    companied by a bird design, as shown below:
    8                    LONGSHORE   v. RETAIL ROYALTY COMPANY
    Board Op. 9. In fact, the Board did consider this design
    when assessing the strength of Retail Royalty’s registered
    mark, but ultimately concluded that its probative value
    was limited given the absence of any evidence indicating
    the extent of the design’s usage or exposure to the public.
    We have held that “[t]he probative value of third-party
    trademarks depends entirely upon their usage.” Palm Bay
    Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
    En 1772, 
    396 F.3d 1369
    , 1373 (Fed. Cir. 2005). Here,
    “where the ‘record includes no evidence about the extent
    of [third-party] uses . . . [t]he probative value of this
    evidence is thus minimal.’” 
    Id. at 1374
    (alterations in
    original, emphasis in original omitted) (quoting Han
    Beauty, Inc. v. Alberto–Culver Co., 
    236 F.3d 1333
    , 1338
    (Fed. Cir. 2001)). The Board did not err in concluding that
    the design reflected in the website had limited probative
    value when there was no evidence showing the extent of
    its usage or the public’s awareness of its existence.4
    4   Longshore also relied on a pending application for
    the Hollister mark. The Board did not err in declining to
    give weight to this submission because, as the Board
    explained, “[p]ending applications are evidence only that
    the applications were filed on a certain date; they are not
    evidence of use of the marks.” Board Op. 4 n.5 (citing Nike
    Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8
    (TTAB 2007); Interpayment Servs. Ltd. v. Docters &
    Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re
    Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699
    (TTAB 1992)); see also Conde Nast Pubs., Inc. v. Miss
    Quality, Inc., 
    507 F.2d 1404
    , 1406–07 (CCPA 1975)
    LONGSHORE   v. RETAIL ROYALTY COMPANY                    9
    Longshore has shown no error in the Board’s decision.
    AFFIRMED
    COSTS
    No costs.
    (“There is no evidence of actual use, and this court has
    made clear that, without such evidence, third party
    registrations are entitled to little weight on the question
    of likelihood of confusion.”).